Former Jefferson Starship Founder Can Sue Over Band Name

Chaquico v. Freiberg, 2017 US Dist LEXIS 128167 [ND Cal Aug. 11, 2017, No. 17-cv-02423-MEJ].

A California Federal Judge determined that the band ‘Jefferson Starship’ lost the right to use their name when co-founder Paul Katner died in 2016. The band name had been contractually retired in 1985 under an agreement, after Katner and various other founders left the band. In 1993, Craig Chaquico, whom brought the suit, agreed to allow Katner to use the name for a new band under a new agreement. The Judge determined that Katner’s death terminated the ’93 agreement and the band’s new members as well as older founders were barred from using the name as they were not parties to the agreement. While the Judge dismissed Chaquico’s Lanham Act claims that the former band members’ imagines in marketing creates confusion, she is allowing the breach of contract claim to proceed.

In Case Involving The Name of a Band, The U.S. Supreme Court Rules Disparagement Clause of Lanham Act Unconstitutional

Matal v. Tam, No. 15-1293 (U.S. June 19, 2017)

The United States Supreme Court ruled that the disparagement clause of the Lanham Act was unconstitutional under the Free Speech Clause of the First Amendment.  The disparagement clause of the Lanham Act, Section 2(a), prohibited the registration of trademarks that my, “disparage ... or bring ... into contemp[t] or disrepute” any “persons, living or dead.” 15 U.S.C. §1051(a).

An Asian-American rock band, “The Slants,” were refused registration of their band name based on a 2(a) rejection that “the slants” is a derogatory term for Asians. The Supreme Court held that the disparagement clause was not narrowly drawn enough to prevent trademarks that support discrimination. The court stated that the clause, “reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”

"DJ Logic" Not Famous Enough to Win Trademark Case Against Rapper "Logic"

Kibler v. Hall, No. 15-2516 (6th Cir. Dec. 13, 2016).

The Sixth Circuit affirmed summary judgment for defendants, holding that a disc jockey named "DJ Logic" was not famous enough to succeed on his trademark dilution claims against the rapper performing as "Logic" and there was no likelihood of consumer confusion.  As to the trademark infringement claim, the parties agreed that the DJ's mark was protectable so the Court focused on "the likelihood that potential buyers of rap would believe Kibler’s music is Hall’s or vice-versa." and applied the 6th Circuit's balancing-test to find that "because no reasonable jury could find a likelihood of confusion based solely on a few instances of actual confusion, defendants are entitled to judgment as a matter of law on Kibler’s federal trademark infringement and related state law claims."  As to the dilution claim, 

Kibler’s evidence clearly falls short of the high threshold for fame under the Lanham Act. “DJ LOGIC” is simply in a different league from the marks that have met this threshold. Indeed, having failed to show that his mark is commercially strong for even trademark infringement purposes, Kibler cannot point to a triable issue here.

Court Clarifies Scope of Injunction in "Commodores" Band Name Dispute

Commodores Entertainment v. McClary, No. 14-cv-1335 (M.D. Fla. Nov. 15, 2016).

The Defendant's post-injunction actions triggered a motion by the Plaintiff clarifying the scope of the injunction, and the Court found that the Revised Band Name (COMMODORES’ Founder Thomas McClary” or “COMMODORES’ founder Thomas McClary") improperly suggested a sponsorship or endorsement by Plaintiff.  The revised band name not only placed “Commodores” before the historical reference,  but also emphasized it by writing it entirely in capital letters.  "Such placement and prominence, in combination with the overlapping audiences for the two bands, at minimum, suggests endorsement and, thus, continues to cause a likelihood of confusion between the two bands."  However, the Court found that Defendant could use Plaintiff’s Marks in a historically accurate manner so long as: (1) Plaintiff’s Marks are preceded by the historically accurate reference; and (2) the Marks are not more prominent than other words contained in the band name.  "For instance, Mr. McClary’s band name could be 'Thomas McClary original founding member of the Commodores' or 'Thomas McClary formerly of the Commodores.'” 

Jury Finds No Likelihood Of Confusion In "Boston" Band Name Trial

Scholz v. Goudreau, No. 13-10951 (D. Mass. Nov. 1, 2016).

The plaintiff, a founder of the rock group "Boston," did not prove a likelihood of confusion between his current band and the band of the defendant, a former member of "Boston," finds a Massachusetts federal jury after relatively brief deliberations on plaintiff's trademark infringement claims.

No Trademark Infringement In Karaoke Case

Phoenix Entertainment v. Rumsey, No. 15-2844 (7th Cir. July 21, 2016).

The 7th Circuit affirmed dismissal of two trademark claims brought by a karaoke company, a serial trademark plaintiff, because the plaintiff had not plausibly alleged that the defendants' conduct resulted in consumer confusion as to the source of any tangible good sold in the marketplace.  Applying the Supreme Court's Dastar decision distinguishing between copyright and trademark claims, the Court noted: "In evaluating Slep-Tone's claims of trademark infringement, we must therefore ask ourselves what the tangible good at issue is, and whether the unauthorized use of the plaintiffs' marks (including trade dress) might cause consumers to be confused about who produced that good. Or is the real confusion, if any, about the source of the creative conduct contained within that good? If the latter, the confusion is not actionable under the Lanham Act."  In the instant case, "The defendants are not selling compact discs with karaoke tracks and billing them as genuine Slep-Tone tracks, in the way that a street vendor might hawk knock-off Yves Saint Laurent bags or Rolex watches to passers-by. Whatever wrong the defendants may have committed by making (or causing to be made) unauthorized copies of Slep-Tone's tracks, they are not alleged to have held out a tangible good sold in the marketplace as a Slep-Tone product. Consequently, the defendants' alleged conduct is not actionable as trademark infringement."

Rapper Enjoined From Using Burberry Trademarks

Burberry Ltd. v. Moise, No. 1:16-cv-05943 (S.D.N.Y. Aug. 15, 2016) [Doc. 30].

Luxury brand Burberry successfully obtained a preliminary injunction against rapper Perry Moise based on his use of various Burberry-related marks.  The preliminary injunction restrains Perry from using the marks, displaying the marks, using "Burberry Perry" or "Burberry" as usernames on his social media accounts, and otherwise engaging in activity associating himself with Burberry.  Perry was also ordered to remove all references to Burberry on his Soundcloud and iTunes pages, from his email address, and from his various social media accounts.  Plaintiff was ordered to post a $5,000 bond.

1st Amend. Protects Kanye's Film Name from Trademark Claims

Medina v. Dash Films et al., No. 15-2551 (S.D.N.Y. July 14, 2016).

In a trademark infringement action against Kanye West and related parties over use of the title "LOISAIDAS" for various films, the Court dismissed (under Rule 12(b)(6)) the complaint of the owner of the trademark LOISAIDAS for rap-names based on the First Amendment right to artistic expression.  Because the term at issue is the title of an artistic work, the Court first asks whether the title has any artistic relevance to the work whatsoever and then, if it does, whether the application of the relevant factors indicates a particularly compelling likelihood of confusion that renders the title explicitly misleading. 

The title “Loisaidas” clearly has artistic relevance to a series of short films about drug dealers seeking to acquire control of the drug trade in Manhattan’s Lower East Side. As noted in the attachments to plaintiff’s complaint, “Loisaidas …. is the Spanish slang term for ‘lower east siders.’” (SAC Exh. B.) The characters repeatedly refer to people and places “downtown in Loisaidas” (Ep. 3, 2:30), and scenes are identifiably set in the Lower East Side (see, e.g., Ep. 2, 0:59 (character bikes past Katz’s Deli)). The copyrighted term was “not arbitrarily chosen just to exploit the publicity value of [plaintiff’s music duo] but instead ha[s] genuine relevance to the film’s story.” Rogers, 875 F.2d at 1001. 

Next, the Court found that the title was not explicitly misleading.  The term was not a source denoter.  In conclusion:

Consideration of plaintiff’s complaint and the expressive work that prompted it permits only one conclusion: that the work is a film, and that its title is artistically relevant to its content and not explicitly misleading as to any association with plaintiff’s music duo. Given the First Amendment values at interest, the Lanham Act and its state law counterparts have been and must be construed not to reach such expression. 

Band's Shut-Down Facebook Page Not A "Use In Commerce"; Injunction Vacated

Emerald City Mgmt., LLC v. Kahn, No. 15-40446 (5th Cir. Mar. 8, 2016) [decision].


The Fifth Circuit vacated a preliminary injunction ordering the leader of a band called "Downtown Fever" to transfer control of a Facebook account to the band's manager who had registered the mark "Downtown Fever."  The lower court had issued an injunction barring defendant from using the band name, and the defendant thereafter voluntarily de-activated the band's Facebook page.  Then, the lower court found that the plaintiff should be granted an injunction ordering the defendant to give control of the Facebook page.  However, the appeals court found that was an abuse of discretion because "neither shutting down a Facebook account nor blocking administrator access to a Facebook account constitutes 'use in commerce' of a trademark.  Because the Facebook page was not accessible to anyone, the defendant was not using the trademark.

Former Commodores Band-Member Properly Enjoined From Using "Commodores" Or Performing Under "Commodores" Name

Commodores Entertainment Corp. v. McClary, No. 14-14883 (11th Cir. Apr. 15, 2016).

The 11th Circuit affirmed a preliminary injunction enjoining the defendants from using the "The Commodores" mark and from performing under the name "The Commodores featuring Thomas McClary" or "The 2014 Commodores."  The Commodores were a popular funk/soul group on the Motown label in the 1970s (hits included Brick House and Three Times a Lady).  In the early 1980s, two fo the original members of hte group left to embark on solo careers, including defendant McClary.  The remaining members, as the plaintiff corporation, continued to perform and registered four trademarks.  In 2014, defendant McClaray began performing songs made famous by the band in the 1970s with his own band called "The Commodores featuring Thomas McClary" or "The 2014 Commodores."  This use gave rise to litigation, and the lower court granted plaintiff a preliminary injunction.  The 11th Circuit affirmed, finding that defendant's use was likely to confuse and therefore plaintiff was likely to succeed on the merits, and further that the plaintiff had standing and had made a showing of irreparable harm.  Lastly, the Court found that there was no error with the distric court's conclusion that the defendants may be enjoined extraterritorially (i.e., outside of the United States).

Rapper Can't Use "Rolls Royce" Name Or Images

Rolls-Royce Motor Cards v. Davis, No. 15-0417 (D.N.J. Mar. 11, 2016).

On an unopposed motion for default judgment, the Court entered a permanant injunction restraining the defendant rapper from using the name "Rolls Royce Rizzy" and using Rolls Royce imagery.  Plaintiff brought claims for trademark infringement, unfair competition, false designation of origin, and trademark dilution under the Lanham Act, and was awarded default judgment on those claims.  However, Plaintiff was not awarded default judgment on its claim for unfair competition under New Jersey common law.

"Rat Pack" Generic For Live Shows

TRP Entertainment v. Cunningham, No. 13-16754 (9th Cir. Feb. 16, 2016) [non-precedential].

The 9th Circuit held that the term "The Rat Pack" is generic in the context of live shows about or in tribute to members of the Rat Pack, therefore not identifying any particular producer of a Rat Pack tribute show.  Further, the lower court correctly ordered a disclaimer of the term "The Rat Pack" modifying the plaintiff's trademark registration pursuant to 15 USC 1119.

Default Judgment Entered In Grooveshark Case

Arista Records v. Tkach et al., No. 15-cv-3701 (SDNY Dec. 11, 2015).

The Court granted Plaintiff record companies a default judgment on their claims for copyright infringement, trademark counterfeiting, unfair competition, and cybersquatting claims based on the websites "grooveshark.io" and "grooveshark.pw".  The plaintiffs had obtained a preliminary injunction, and the defendants did not respond to either the injunction or the complaint in any manner.  The Court entered a judgment permanently enjoining Defendants' use of the "Grooveshark" marks and the infringing domains.  Plaintiff UMG was also awarded $4 million for the trademark infringement, $400,000 for the cybersquatting, and statutory damages on the copyright claim of over $13 million.  Plaintiffs were also granted their attorney's fees, to be calculated on a later submission.

Stratotone Mark For Guitars Was Abandoned, Permitting Junior Use

Agler v. Westheimer Corp., No. 14-099 (N.D. Indiana 10/28/15).

In a trademark infringement action concerning the mark STRATOTONE for guitars, the Court held that an abandonment of the mark permitted a junior user's use of the mark.  A period of non-use by one of the parties triggered a presumption of abandonment, which was not rebutted.

Will.i.am Denied Registration of :I AM" Trademark For Sunglasses

In re i.am.symbolic, llc, Serial Nos. 85044495 (TTAB mailed Oct. 7, 2015).

Black Eyed Peas frontman, "will.i.am," was refused registration of the mark I AM for use on sungalsses, on the basis of an existing mark for sunglasses for which there was a finding of likelihood of confusion.  However, the application was permitted to proceed for other goods identified in the application under Class 9.

Most "BOSTON" Trademark Claims Dismissed In Dispute Between Former Band Members

Scholz v. Goudreau, No. 13-cv-10951 (D. Mass. Memo & Order Sep. 21, 2015).

In a trademark dispute between two original members of the band BOSTON, the Court dismissed most of the claims against a guitarist on the band's first two albums concerning the promotion of his current musical endeavors.  Plaintiff's direct trademark infringement claims were dismissed with respect to various advertisements and performances, as well as defendant's use of meta-tags on his website.  The contributory infringement claim survived summary judgment only with respect to defendant's invovlement with one band on the issue of direct control and monitoring of that band's advertisements and promotions.  Plaintiff's claim for dilution by tarnishment failed because the alleged use, in connection with a political event, was not a use in commerce.  As to unfair competition under the Lanham Act and Mass. state common law, plaintiff failed to establish evidence of reputational injury.  As to breach of contract, plaintiff fialued to establish that defendant (and not third parties) violated a prior settlement agreement by deviating from the agreed to term "formerly of BOSTON".  As to the "Truth In Music Statute," under Mass. state law, the Court found the statute applicable only to performances in Mass., and as to the two subject performances in the state, neither group sought to perform under the BOSTON name.

Taylor Swift Must Be Deposed, Despite Her World Tour

Blue Sphere, Inc. v. Swift et al., No. 8:14-cv-00782-CJC-DFM (C.D. Cak. filed 08/04/15) [Doc. 65].

Despite her world tour, and claims that she has no knowledge about Plaintiff's claims, Taylor Swift must be deposed in a trademark action.  The Court denied her motion for a protective order, finding that that, notwithstanding the "apex doctrine" that protects high-level corporate executives from harassing depositions,  "the extraordinary circumstances that would warrant a pr otective order prohibiting the deposition of a named party are not present here."  Further, Swifts schedule -- including her world tour -- was not a basis for a protective order.  "There is no evidence in the record to show that Plai ntiffs have been inconsiderate of Swift’s schedule. To the contrary, the record shows just the opposi te. Nor does the evidence suggest that Plaintiffs have sandbagged Swift’s deposition to coincide with her world tour; instead, the record shows that, as in most cases, most deposi tions have been left until the end of the discovery period."

Keith Urban PLAYER Trademark Case Dismissed

Beckett v. Urban et al., No. 15-cv-1407 (C.D. Cal. dated July 6, 2015).

A trademark infringment and dilution claim against country music star Keith Urban, concerning the mark PLAYER, was dismissed on the pleadings.  The Court found that plaintiff’s mark of “PLAYER” and Defendant s’ mark “Player by Keith Urban” are not sufficiently similar.  Defendants use of the phras e “by Keith Urban” clearly denotes that Keith Urban is the good’s source, dispelling any potenti al confusion with Plaintiff’s band “PLAYER.”  Further, the Court found that Plaintiff’s and Defendants’ goods and servicees are not closely re lated. Plaintiff’s trademark is for audio and video recordings featuring music and artistic performances by a rock band and for entertainment services in the nature of live audio performances by a rock band.  Defendants are marketing a guitar and guitar lesson kit complete with audio a nd video recordings that teaches a consumer to use and play guitar. As to the dilution claim, Plaintiff failed to allege that his mark is sufficiently famous.

Jackson 5 Tribute Band Trademark Cancelled

Wonderbread 5 v. Gilles, TTAB No. 92052150 (TTAB 6/30/2015).

This case involves a dispute about who owns the band’s name in the wake of the departure of one of the band’s five members.  The band, a Jackson 5 tribute band, filed a petition to cancel a trademark registration obtained by a former member who filed the application for the registration only 3 days after he was fired from the band.  The court found by a preponderance of the evidence that the mark WONDERBREAD 5 was not “personal” to the applicant/departing-band-member (Gilles), or for that matter, any of the band members as individual musicians.  Rather, the mark signified the collective “style and quality” of the group, and the partnership, not the departing band member, controlled those qualities. That is to say, the mark WONDERBREAD 5 identified a Jackson 5 tribute band, not a “particular performer combination.”  Thus, because the consuming public did not associate the mark with a particular member (but rather, a style of tribute band), the applicant did not "own" the mark when he applied for it.  The application was therefore void ab initio, and the registration was cancelled.

Everyday I'm Hustlin' Lawsuit Against LMFAO Survives

Roberts v. Gordy, No. 13-24700 (S.D. Fla. dated Feb. 5, 2015).

Performer Rick Ross brought this action against the group LMFAO over use of "Everyday I'm Hustlin'" / "Everyday I'm Shufflin'"  in defendant's song Party Rock Anthem.  LMFAO moved to dismiss on the pleadings plaintiff's copyright and trademark infringement claims.  The Court denied the motion, finding at this stage of the proceedings, plaintiff's allegations were sufficient.  Whether the phrase was copyrightable, or the works were substantially similar, were not appropriate for a motion on the pleadings as those issues would require a fact intensive inquiry.  Similarly, a factual inquiry was required on the trademark claim as to whether the phrase had acquired distinctiveness/secondary meaning.